DECISION

 

Bill Sizemore v. DIS, Inc. c/o Ernest Delmazzo

Claim Number: FA0312000221173

 

PARTIES

Complainant is Bill Sizemore, 23630 S. Bluhm Road, Beavercreek, OR 97004 (“Complainant”).  Respondent is DIS, Inc. c/o Ernest Delmazzo, P.O. Box 614, West Linn, OR 97068 (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <billsizemore.com> and <billsizemore.org>, registered with Tucows, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Richard B. Wickersham, Judge (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 22, 2003; the Forum received a hard copy of the Complaint on December 31, 2003.

 

On December 23, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <billsizemore.com> and <billsizemore.org> are registered with Tucows, Inc. and that the Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 2, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@billsizemore.com and postmaster@billsizemore.org by e-mail.

 

A timely Response was received and determined to be complete on February 2, 2004.

 

On February 6, 2004 an Additional Submission was received and was timely.  It was fully considered by Panelist.

 

On February 12, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Richard B. Wickersham, Judge (Ret.) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

Bill Sizemore is my personal name; the name under which I have been registered to vote for more than 20 years; and the name that appeared on the ballot in the primary and general election when I was the Republican candidate for governor of Oregon in 1998.  Bill Sizemore was part of my business name, Bill Sizemore, Carpet Broker, from 1981-1985; the name of my radio program, The Bill Sizemore Show, which is temporarily on hold, but has aired daily for the past four years in Portland, Oregon.  Bill Sizemore is part of the name of my ongoing business, Bill Sizemore Consulting.

 

I also have registered the mark BILL SIZEMORE with Oregon’s business registration instrument, the Secretary’s of State Corporate Division.

 

The name Bill Sizemore has appeared on hats, T-shirts, and bumper stickers.  I have also used my name on dozens of billboards appearing all over the greater Portland area, and on thousands of yard signs.  I intend to do all of the above again to promote my radio show when I have negotiated a new contract with another station, and when I attempt another run for public office.

 

The websites currently using my name, both <billsizemore.com> and <billsizemore.org>, represent themselves as an information site on Bill Sizemore, but are in fact one anti Bill Sizemore site designed to tear down my name and diminish the value of my name and mark.  The sponsor uses my name exactly as it is widely known to the public and associated with me, to besmirch me and the various political organizations I started for the purpose of political action.  ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4 (a)(i).

 

The Respondent is using the domain name on behalf of labor unions, my arch enemies in Oregon politics, to disperse negative propaganda about me and my political committees.  They may have a right to distribute their opinions about me, but do not have the right to register my name as a domain by which they may spread their hate and prevent me from access to the billsizemore.com and billsizemore.org domains.  The site currently using my name contains a disclosure that says that unions are not paying for the site, but almost everything on the site echoes union propaganda I have seen in the past.

 

The site is not offering to sell goods.  It is just one big hit piece on Bill Sizemore.  The site has not interest in the name, Bill Sizemore, other than to tarnish or diminish it.

 

B. Respondent

 

I believe the Complainant has failed to satisfy any of the three elements required under the ICANN Policy ¶ 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)        the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)        the Respondent has no rights or legitimate interests in respect of the           domain name, and;

            (3)        the domain name has been registered and is being used in bad faith.

 

There is no likelihood of confusion by visitors that this web site is managed or run by Bill Sizemore.  In other words, no attempt has been made to create an association with the Complainant.  ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).

 

Bill Sizemore is a fairly common name to which the Complainant cannot hope to have exclusive rights.  A search of “Bill Sizemore” in Yahoo! People Search alone brought 182 results.  This is likely a small percentage of the persons with this name.  At the same time Bill Sizemore is not a household name (such as Martha Stewart or Michael Jordan).

 

The relevant date of registration of <billsizemore.org> (Nov. 22, 2000) is more than two years before the filing of the Complaint.  Site content has existed for 37 months and the Complainant must have known that the domain name was owned for much of that time as it has been linked for a couple years from the web site of Oregon’s largest newspaper, The Oregonian, as a source for information.  Although since removed from links elsewhere at their site, the link to my site from <oregonlive.com/special/politics/sizemore.ssf> is evidence that Oregon’s dominant media company viewed the web site as a source for credible and newsworthy information.  ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).

 

My web site links to articles by prominent and well respected media.  Articles linked to include such titles as “State seeks to close Sizemore operation,” “Sizemore camp fights dissolution,” “State allowed to join suit against Sizemore group,” and “Judge halts Sizemore funding.”  My web site provides a single, easily accessible location for news and information.  It is a public service.  As it has existed for 37 months and found a following, loss of the domain will cause irreparable harm to me.

 

My web site has not been used for commercial gain and no money has been received in conjunction with it.  There is absolutely no truth to Mr. Sizemore’s accusation that I’m using the domain on behalf of labor unions, and anyway it’s irrelevant to the issue at hand.  ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii).

 

I have never bought a domain in order to sell it for profit.  In fact, I have never sold a domain that I have bought.  I do, as a web site designer, purchase domains regularly for clients.  I build and maintain a large percentage of these sites for free.  On these I usually retain ownership of the domain.

 

FINDINGS AND DISCUSSION

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)    the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar  Policy ¶ 4(a)(i).

 

Finding for Complainant

Complainant alleges rights in the BILL SIZEMORE mark based on the fact that it is Complainant’s personal name, which is widely known in the State of Oregon, and is used in connection with its political career, consulting business, and with a Portland, Oregon radio program.  See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that Complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that Complainant has common law rights to her name); see also Barnes v. Old Barn Studios, Ltd., D2001-0121 (WIPO Mar. 26, 2001) (finding all that is required for a well-known person to establish a common law trademark is likelihood of success in an action for passing off in the event of use in trade without authority); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusingly similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name).

 

Likewise, the Panel may find that Complainant has established rights in the BILL SIZEMORE name through its use in business and/or as a media entertainer via its radio program. See Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (holding that for a claim to be brought under the ICANN Policy based on a personal name, the Complainant must establish the distinctive character of the name, which relates to whether or not the person in question is sufficiently famous in connection with the services offered by that complainant.); see also Libby v. Tuzlaci, D2001-1342 (WIPO Jan. 24, 2002) (“Complainant has conducted a successful business for many years under his name and for most of the last five years has used the Domain Name in the course of his professional practice. The Panel has no hesitation in finding that the Complainant has common law rights in his name and service mark.”); see also Brown v. Julie Brown Club, D2000-1628 (WIPO Feb. 13, 2001) (“[P]erformers can establish trade mark rights either by showing that they have registered their names as marks for certain goods or services, or because, through deployment of the names as source indicators in commerce, they have unregistered or "common law" rights to protection against misleading use.”) see also Fox News Network, L.L.C. v. Pro-Life Domains Inc., D2003-0335 (WIPO July 2, 2003) (“[P]revious Panels have found that entertainment personalities do acquire common law trademark rights in their names when they use their names to sell entertainment services. The Panel finds this to be true in this Case.”) see also Rudner v. Internetco Corp., D2000-0581 (WIPO Aug. 3, 2000) (Although Complainant did not allege a trademark registration for the “Rita Rudner” name, the use of the name to identify various products and entertainment services was “more than enough to establish common law trademark rights,” especially because Complainant also used the name in connection with her company, Rita Rudner Enterprises.).

 

In its Additional Submission, Complainant also notes that it has used its BILL SIZEMORE name and mark in very public ways for more than two decades, which Respondent implicitly acknowledges when it refers to Complainant in its Response as a “public figure.”  Complainant also has provided evidence of its registration of the BILL SIZEMORE mark with Oregon’s Secretary of State.

 

Rights and Legitimate Interests Policy ¶ 4(a)(ii).

 

Finding for Complainant

Complainant argues that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) because the attached website is merely a reactionary stance to Complainant’s political views. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

 

Additionally, Complainant contends that Respondent is not offering any type of goods or services pursuant to Policy ¶ 4(c)(i), which Respondent concedes.

 

Complainant argues that Respondent is not making a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii) because the contents provided under the names tarnish the BILL SIZEMORE mark through hateful propaganda.  See Royal Bank of Scotland Group & Nat’l Westminster Bank v. Lopez, D2002-0823 (WIPO Dec. 3, 2002) (“[T]he Respondents have used domain names that are identical and substantially similar to Complainants' trademarks to exercise their freedom of expression and this has the direct consequence of tarnishing Complainants' trademarks. Respondents' can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainants' marks.”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that Respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant) . . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”); see also Direct Line Group Ltd. v. Purge I.T., D2000-0583, (WIPO Aug. 13, 2000) (finding that use of Complainant’s name and adoption of it in a domain name is inherently likely to lead some people to believe that Complainant’s are connected with it); see also Name.Space Inc. v. Network Solutions, 202 F.3d 573, 585 (2d Cir. 2000) (although the content of Respondent’s site may be entitled to First Amendment protection, Respondent’s use of Complainant’s trademark in the domain name of its site is not protected. Since Respondent’s domain name merely incorporates Complainant’s trademark, it does not constitute a protectable, communicative message); see also DFO, Inc. v. Williams, D2000-0181 (WIPO May 14, 2000) (finding that Respondent did not use the domain name <dennys.net> as a legitimate noncommercial or fair use because Respondent chose a name that would lead Internet users to the conclusion that the attached website was affiliated with the Denny’s restaurant chain.  Moreover, Respondent’s disclaimer failed to remedy the confusion and infringing use of Complainant’s mark).

 

            Registration and Use in Bad Faith Policy ¶ 4(a)(iii).

            Finding for Complainant

Complainant argues that Respondent registered and uses the disputed domain names in bad faith by appropriating Complainant’s BILL SIZEMORE mark in the names, designing the attached website in a dubious way such that Internet users are duped into believing the site is official, and failing to provide a disclaimer on the site that informs the user that the content is not affiliated with Complainant.  Taken as a whole, Complainant argues this is evidence of bad faith registration and use.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about Complainant); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although Respondent’s complaint website did not compete with Complainant or earn commercial gain, Respondent’s appropriation of Complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); see also Jenner & Block LLC v. Defaultdata.com, FA 117310 (Nat. Arb. Forum Sept. 27, 2002) (“Respondent’s argument that there is an inherent conflict between the Internet and the Constitutional right to free speech at the address to a business sounds impressive but is no more correct that than the argument that there is a Constitutional right to intercept telephone calls to a business in order to speak to customers. Respondent’s conduct is not the equivalent of exercising the right of free speech outside Complainant’s business street address but of impermissibly blocking traffic to that street address.”); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that Respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where Respondent published negative comments regarding Complainant’s organization on the confusingly similar website).

 

The Panel may find that Respondent knowingly infringed on Complainant’s mark, which evidences bad faith registration and use.  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); c.f. Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

 

The Panel may also find bad faith registration and use because Respondent attempted to pass itself off as Complainant.  See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that Respondent's use of <monsantos.com> to misrepresent itself as Complainant and to provide misleading information to the public supported a finding of bad faith); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that Respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that Complainant endorsed and sponsored Respondent’s website).

 

Moreover, the Panel may find that Respondent has misled the Panel by asserting that Complainant has been “found guilty in a court of law for racketeering and other violations of law,” which is itself sufficient to rule in favor of Complainant. See Rodale, Inc. v. Resource Mktg., DBIZ2002-00156 (WIPO July 7, 2002) (finding that Complainant affirmatively attempted to mislead the Panel through a material omission and its affirmative misstatement, providing a sufficient basis alone for the Panel to rule for Respondent).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <billsizemore.com> and <billsizemore.org> domain names be TRANSFERRED from Respondent to Complainant.

                                   

 

                                                 

                                               

 

Richard B. Wickersham, Judge (Ret.), Panelist
Dated: February 26, 2004

 

 

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